DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/23/2025 has been entered.
3. Claims 1-24 are pending in this amended application.
Double Patenting
4. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
5. Claims 1-24 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,431,873 B2.
It is clear that all the elements of the instant application independent claims 1, 11, 20 are to be found in patent (U.S. Patent No. 11,431,873 B2) claims 1, 12-13 as the application independent claims 1, 11, 20 fully encompasses the patent claims 1, 12-13. The difference between the instant application independent claims 1, 11, 20 and the patent (U.S. Patent No. 11,431,873 B2) claims 1, 12-13 lies in the fact that the patent (U.S. Patent No. 11,431,873 B2) claim includes many more elements and is thus much more specific. Thus, the invention of claims 1, 12-13 of the patent (U.S. Patent No. 11,431,873 B2) is in effect a “species” of the “generic” invention of the application instant independent claims 1, 11, 20. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant application independent claims 1, 11, 20 are anticipated by claims 1, 12-13 of the patent (U.S. Patent No. 11,431,873 B2), it is not patentably distinct from claims 1, 12-13 of the patent (U.S. Patent No. 11,431,873 B2).
Claim Rejections - 35 USC § 103
6. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
7. Claims 1-24 are rejected under 35 U.S.C. 103 as being unpatentable over in view of Maehira, US Pub 2013/0003114 in view of Sumita et al. [hereafter Sumita], US Pub 2013/0229690.
As to claims 1, 11, 20 [independent], Maehira teaches a non-transitory computer-readable storage medium [fig. 2, element 22 or 23 or 27; 0031] storing a program [fig. 2, element 22 or 23 or 27; 0031-0032] causing a mobile terminal [fig. 1, element 2; 0028] to receive, by short range wireless communication, connection information from an image processing apparatus to perform a method, the method comprising [fig. 1, elements 2-3; 0028 Maehira teaches that the mobile device 2 obviously receives wireless connection information, for establishing communication between the mobile device 2 & fax device 3, from fax device 3 to transmit the image data to the fax device/printer 7 using wireless communication protocol]:
receiving a selection, by a user, of a name of a person stored in the mobile terminal [figs. 5-8; 0076-0088 Maehira teaches that the user selected the destination address, i.e. phone number and name, of the recipient on screen (e.g., figs. 6-7) may be using the address book (para., 0079) and transmitted the selected image data with the selected phone number and name to the printer 3 via the wireless communication protocol]; and
transmitting image data indicating an image including the selected name of the person to the image processing apparatus, the image including the selected name of the person being an image in which at least the selected name of the person is positioned [figs. 5-8, 10; 0076-0088, 0119-0132 Maehira teaches that the user selected the destination address, i.e. phone number and name, of the recipient on screen (e.g., figs. 6-7) may be using the address book (para., 0079). The mobile device 2 transmitted the selected image data with the selected phone number and name to the fax device 3 via the wireless communication protocol (e.g., paras., 0119-0132)],
Maehira doesn’t teach wherein the image data is transmitted by the wireless communication different from the short range wireless communication using the connection information received by the short range wireless communication from the image processing apparatus.
Sumita teaches wherein the image data is transmitted by the wireless communication different from the short range wireless communication using the connection information received by the short range wireless communication from the image processing apparatus [fig. 12, steps 1203-1206, 1213-1219; 0090, 0092-0093 Sumita teaches that the mobile device 200 transmitted the image data to the printer 300 using blue tooth(BT) communication protocol has larger communication range than the NFC communication protocol (para., 0093), for establishing communication between the mobile device 200 & printer 300, after the connection information acquired from the printer 300 through the NFC communication protocol (para., 0092)].
Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Sumita teaching to transmit image data using second wireless communication protocol different from first short range wireless communication protocol to modify Maehira’s teaching to display a screen required for a user to designate a print setting upon printing data to be printed which allows the user to select whether or not to make print settings without any special operations such as key operations or button operations, when information held by mobile terminal is to be printed using the printer, when the wireless communication with the communication device exists for not less than a predetermined period of time, and controller controls a printer 300 to print to-be-printed data corresponding to print information received from communication device. The suggestion/motivation for doing so would have been benefitted to the user to acquire printer address, since the communication of the mobile device over the near field communication unit of the printer is maintained for predetermined period of time, the detailed print setting screen is displayed to greatly improve the operability.
As to claims 2, 12 [dependent from claims 1, 11 respectively], Maehira teaches the method further comprising, generating the image data indicating the image including the selected name of the person [figs. 5-8, 10; 0076-0088, 0119-0132 Maehira teaches that the user selected the destination address, i.e. phone number and name, of the recipient on screen (e.g., figs. 6-7) may be using the address book (para., 0079). The mobile device 2 transmitted the selected image data with the selected phone number and name to the fax device 3 via the wireless communication protocol (e.g., paras., 0119-0132)],
wherein the generated image data is transmitted, by the wireless communication, to the image processing apparatus [figs. 5-8, 10; 0076-0088, 0119-0132 Maehira teaches that the user selected the destination address, i.e. phone number and name, of the recipient on screen (e.g., figs. 6-7) may be using the address book (para., 0079). The mobile device 2 transmitted the selected image data with the selected phone number and name to the fax device 3 via the wireless communication protocol (e.g., paras., 0119-0132)].
As to claims 3, 13 [dependent from claims 1, 11 respectively], Maehira teaches wherein the image data is transmitted by the image processing apparatus to a destination corresponding to the selected name of the person [fig. 12; 0076-0088, 0119-0132, 0135-0143 Maehira teaches that the user selected the destination address, i.e. phone number and name, of the recipient on screen (e.g., figs. 6-7) may be using the address book (para., 0079). Then, the fax device 3 transmitted the received image data to the fax device/printer 7 (paras., 0135-0143), via wireless communication protocol (para., 0028)].
As to claims 4, 14 [dependent from claims 1, 11 respectively], Maehira teaches receiving selection of a title of respect by the user [fig. 8; 0088],
wherein the image data indicating the image including the selected name of the person and the selected title of respect are transmitted to the image processing apparatus by the wireless communication [fig. 12; 0076-0088, 0119-0132, 0135-0143 Maehira teaches that the user selected the destination address, i.e. phone number and name, of the recipient on screen (e.g., figs. 6-7) may be using the address book (para., 0079). Then, the fax device 3 transmitted the received image data to the fax device/printer 7 (paras., 0135-0143), via wireless communication protocol (para., 0028)].
As to claims 5, 15 [dependent from claims 1, 11 respectively], Maehira teaches wherein the image includes the selected name of the person and a name registered as a profile of the user [figs. 5-8, 10; 0076-0088, 0119-0132 Maehira teaches that the user selected the destination address, i.e. phone number and name, of the recipient on screen (e.g., figs. 6-7) may be using the address book (para., 0079)].
As to claims 6, 16 [dependent from claims 1, 11 respectively], Sumita teaches wherein the short range wireless communication is a communication using an NFC tag [fig. 12, steps 1203-1206, 1213-1219; 0090, 0092-0093 Sumita teaches that the mobile device 200 established the wireless connection with the printer 300 through the NFC communication protocol (para., 0092)].
Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Sumita teaching to transmit image data using second wireless communication protocol different from first short range wireless communication protocol to modify Maehira’s teaching to display a screen required for a user to designate a print setting upon printing data to be printed which allows the user to select whether or not to make print settings without any special operations such as key operations or button operations, when information held by mobile terminal is to be printed using the printer, when the wireless communication with the communication device exists for not less than a predetermined period of time, and controller controls a printer 300 to print to-be-printed data corresponding to print information received from communication device. The suggestion/motivation for doing so would have been benefitted to the user to acquire printer address, since the communication of the mobile device over the near field communication unit of the printer is maintained for predetermined period of time, the detailed print setting screen is displayed to greatly improve the operability.
As to claim 7 [dependent from claim 1], Maehira teaches wherein the name of the person is registered by an application different from the program [figs. 5-8, 10; 0076-0088, 0119-0132 Maehira teaches that the user selected the destination address, i.e. phone number and name, of the recipient on screen (e.g., figs. 6-7) may be using the address book (para., 0079)].
As to claims 8, 17 [dependent from claims 1, 11 respectively], Maehira teaches wherein the name of the person, a mail address and a telephone number are stored in the mobile terminal [figs. 5-8, 10; 0076-0088, 0119-0132 Maehira teaches that the user selected the destination address, i.e. phone number and name, of the recipient on screen (e.g., figs. 6-7) may be using the address book (para., 0079)].
As to claims 9, 18 [dependent from claims 1, 11 respectively], Sumita teaches the method further comprising, prompting, after receiving the selection of the name of person, the user to hold the mobile terminal over the image processing apparatus [0042, 0087, 0090 Sumita teaches that the after receiving name, the user puts the mobile device 200 in the vicinity of (over) the NFC unit 918 of the printer 300].
Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Sumita teaching to transmit image data using second wireless communication protocol different from first short range wireless communication protocol to modify Maehira’s teaching to display a screen required for a user to designate a print setting upon printing data to be printed which allows the user to select whether or not to make print settings without any special operations such as key operations or button operations, when information held by mobile terminal is to be printed using the printer, when the wireless communication with the communication device exists for not less than a predetermined period of time, and controller controls a printer 300 to print to-be-printed data corresponding to print information received from communication device. The suggestion/motivation for doing so would have been benefitted to the user to acquire printer address, since the communication of the mobile device over the near field communication unit of the printer is maintained for predetermined period of time, the detailed print setting screen is displayed to greatly improve the operability.
As to claims 10, 19 [dependent from claims 1, 11 respectively], Sumita teaches wherein the connection information is an IP address [0036, 0078].
Thus, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to incorporate Sumita teaching to transmit image data using second wireless communication protocol different from first short range wireless communication protocol to modify Maehira’s teaching to display a screen required for a user to designate a print setting upon printing data to be printed which allows the user to select whether or not to make print settings without any special operations such as key operations or button operations, when information held by mobile terminal is to be printed using the printer, when the wireless communication with the communication device exists for not less than a predetermined period of time, and controller controls a printer 300 to print to-be-printed data corresponding to print information received from communication device. The suggestion/motivation for doing so would have been benefitted to the user to acquire printer address, since the communication of the mobile device over the near field communication unit of the printer is maintained for predetermined period of time, the detailed print setting screen is displayed to greatly improve the operability.
As to claims 21, 23 [dependent from claims 1, 11 respectively], Maehira teaches wherein the image including the selected name of the person is an image in which the selected name is described [figs. 5-8, 10; 0076-0088, 0119-0132 Maehira teaches that the user selected the destination address, i.e. phone number and name, of the recipient on screen (e.g., figs. 6-7) may be using the address book (para., 0079)].
As to claims 22, 24 [dependent from claims 1, 11 respectively], Maehira teaches wherein the transmitted image data is image data being generated by using the selected name [figs. 5-8, 10; 0076-0088, 0119-0132 Maehira teaches that the user selected the destination address, i.e. phone number and name, of the recipient on screen (e.g., figs. 6-7) may be using the address book (para., 0079). The mobile device 2 transmitted the selected image data with the selected phone number and name to the fax device 3 via the wireless communication protocol (e.g., paras., 0119-0132)].
Response to Arguments
8. Applicant’s arguments with respect to claims 1-24 have been considered but are moot because the new prior reference(s) is/are being employed in this current rejection and the arguments do not apply to any of the references being used in the current rejection.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARIS SABAH whose telephone number is (571)270-3917. The examiner can normally be reached on Monday/Friday from 9:00AM to 5:30PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Benny Tieu, can be reached on (571)272-7490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. The Examiner’s personal fax number is (571)270-4917.
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/HARIS SABAH/Examiner, Art Unit 2682